77894 Drafting of Patent Specifications

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Subject handbook information prior to 2025 is available in the Archives.

UTS: Law
Credit points: 6 cp
Result type: Grade and marks

Requisite(s): 77898 Patent Law
These requisites may not apply to students in certain courses.
There are course requisites for this subject. See access conditions.

Description

This subject sets the foundations for the most important skills that a patent attorney can have, namely, the ability to draft competent independent and dependent patent claims with an accompanying patent description:

• Independent claims that are valid, clear and succinct and whose scopes are not too broad and not too narrow so as to be difficult for competitors to avoid. It is particularly important to direct the main independent claim in a patent specification in a way that not only achieves the client's main objective but is also differentiated from and arguably has an inventive step over the known prior art.
• A set of dependent claims that provide adequate fallback positions should the independent claim upon which they depend be found invalid.
• A patent description that supports the claims, which is 'clear enough and complete enough for the invention to be performed by a person skilled in the art' (Patents Act 1990 (Cwlth), s. 40(2)(a)) and which discloses the best method of performing the invention (Patents Act, s. 40(2)(aa)).

Students develop practical patent drafting and analytical skills through online group assessments, individual assessments and case studies that mirror the legal and factual drafting issues that arise in practice.

Subject learning objectives (SLOs)

1.	Critically obtain and analyse core information about an invention from a general description of a preferred embodiment of the invention and determine the key underlying inventive concept therefrom.
2.	Draft a set of claims which includes independent and dependent claims that are consistent with the determined inventive concept and define the invention given relevant prior art and the object(s) of the invention.
3.	Critically review and refine the claims to the point where they adequately define the invention with suitable fallback positions, prima facie meet the requirements of the relevant patent legislation and are in a suitable form for inclusion in a patent specification to accompany a provisional application, a standard complete application, an international patent application or an innovation patent application.
4.	Draft a body of a patent specification to accompany the set of independent and dependent claims which includes all the requisite parts and is structured in an acceptable manner.
5.	Critically review and refine the body of the patent specification, particularly the suitability of the objects and description of the preferred embodiment(s) therein, to ensure that it adequately supports and enables the set of claims and is otherwise compliant with the relevant patent legislation.
6.	Think critically and strategically in relation to a complex professional conduct problem in a patent drafting scenario.

Course intended learning outcomes (CILOs)

This subject also contributes specifically to the development of the following graduate attributes which reflect the course intended learning outcomes:

• Legal Knowledge
  An advanced and integrated understanding of a complex body of legal knowledge including:
  a. The Australian colonial and post-colonial legal system, international and comparative contexts, theoretical and technical knowledge;
  b. The broader contexts within which legal issues arise and the law operates including cultural awareness, social justice and policy;
  c. The principles and values of justice and ethical practices in lawyers' roles;
  d. The impact of Anglo-Australian laws on Indigenous peoples, including their historical origins in the process of colonisation and ongoing impact; and
  e. Contemporary developments in law and its professional practice. (1.1)
• Ethics and Professional Responsibility
  An advanced and integrated capacity to value and promote honesty, integrity, cultural respect, accountability, public service and ethical standards including:
  a. An understanding of approaches to ethical decision making;
  b. An understanding of the rules of professional responsibility;
  c. An ability to reflect upon and respond to ethical challenges in practice;
  d. A developing ability to engage in the profession of law and to exercise professional judgment; and
  e. An ability to reflect on and engage constructively with diversity in practice. (2.1)
• Critical Analysis and Evaluation
  A capacity to think critically, strategically and creatively, including an ability to:
  a. Identify and articulate complex legal issues in context, including the skill of critical reading and writing;
  b. Apply reasoning and research to generate appropriate theoretical and practical responses; and
  c. Demonstrate sophisticated cognitive and creative skills in approaching complex legal issues and generating appropriate responses. (3.1)
• Communication
  Well-developed professional and appropriate communication skills including:
  a. Highly effective use of the English language to convey legal ideas and views to different and diverse audiences and environments;
  b. An ability to inform, analyse, report and persuade;
  c. An ability to strategically select an appropriate medium and message;
  d. A cognisance of advanced communication technologies and willingness to adopt where appropriate; and
  e. An ability to respond respectfully. (5.1)
• Collaboration
  Advanced and integrated collaboration skills in working together to achieve a common goal in a group learning environment or the workplace including:
  a. An ability to give and receive feedback;
  b. Appropriate professional and interpersonal skills in working collaboratively; and
  c. A capacity to develop strategies to successfully negotiate group challenges. (6.1)

Teaching and learning strategies

Strategy 1: Learning through engagement with each module

The subject adopts a system of self-managed learning, using Canvas Learning Management System (hereinafter referred to as Canvas). Preparation and reflection on the material presented in each module on Canvas is central to the learning in this subject. Each module contains key resources, including reading lists for text book reading, sample patent specifications along with practice and review activities designed to apply and consolidate understanding of key concepts taught in the subject.

Students complete the readings and activities for each Module on Canvas and in this way learn the background for claim and specification drafting and become familiar with relevant law and other critical material.

Having prepared in this manner, students then engage with the lectures which are offered as video and audio materials within each Module. Lectures provide formal tuition in the structure of a patent specification (including the claims) and approaches to patent description and claim drafting as well as revising the relevant patent law. By engaging with the lectures students obtain clarification of the law and perspectives on the recommended readings from the teacher and guest speakers.

Online learning materials are released as students complete each Canvas module. As subsequent modules are not released until completion of the previous Module, students must implement an effective time management strategy to complete the Modules as well as any case studies, online discussions, readings and assessment tasks in a timely manner.

Strategy 2: Practising drafting skills and collaborative activities

Students have the opportunity to practise their patent drafting skills by completing case study activities. Students apply the knowledge and skills learnt in the subject modules to the case study scenarios and in this way, gain practice in the skill of patent drafting.

A series of seven non-assessable case studies are provided in parallel for students to attempt, submit and receive comments followed by the provision of sample claims with which students can compare their claim drafting efforts. Additionally, students are required to complete two assessable group case study exercises.

Completion of these activities provides students with a gradual introduction to claim drafting as well as an opportunity to develop their skills and share knowledge and insights with their peers. Individual feedback is provided on completed claims, as well as sample claims with which to compare their efforts (see ‘Strategy 3: Feedback’ below).

Strategy 3: Feedback

Detailed guidance as to the assessment criteria and the provision of timely feedback enable students to further develop their academic skills and clarify their understanding of relevant materials. Students will receive early formative feedback from week three onwards via the Discussion Board on Canvas and early feedback from drafting assessments. By engaging with this feedback and applying the knowledge gained from it in subsequent activities and assessment tasks, students reflect on and further develop their knowledge and skills in patent drafting.

Students also receive feedback from their peers as they complete group activities. Ongoing written feedback is provided by the teaching staff to students via the Discussion Boards on Canvas.

Strategy 4: Guest Speakers

Students will observe a video case study modeling the process of an expert working through a problem to draft a patent specification along with an expert interview regarding professional conduct issues that arise in patent drafting practice. These guest speakers will provide students with authentic learning experiences demonstrating real world issues and how professionals approach and resolve these issues.

Subject delivery: The subject is delivered wholly online and requires no on-campus attendance.

Content (topics)

Topic 1 - Introduction and overview

Topic 2 - Terminology and format

Topic 3 - Approaches to claim drafting:

1. Determining an inventive concept
2. Drafting and refining an independent claim
3. Drafting and refining dependent claims
4. Distinguishing claims from prior art
5. Legislative requirements for claims
6. Drafting a complete patent specification
7. Legislative requirements for a patent description

Topic 4 - Practical Exercises in drafting: Case studies (1) – (7) over various weeks

Topic 5 - Drafting for specific technologies:

1. Chemical and biotech inventions
2. Computer technologies

Topic 6 - Discuss answers to 1st Written Assessment Task (WAT)

Topic 7 - Discuss answers to 2nd WAT, and revision

Assessment

Assessment task 1: Two group claim drafting exercises

Objective(s):	This task addresses the following subject learning objectives: 1 and 2 This task contributes specifically to the development of the following graduate attributes: 1.1, 3.1, 5.1 and 6.1
Weight:	10%
Length:	First Group Exercise: 100 words. Second Group Exercise: 200 words.
Criteria:	First Group Exercise: The inventive concept is assessed by taking into account: the statement of inventive concept in defining the invention; consistency of the statement of inventive concept with the main objective; clarity of the statement of inventive concept; succinctness of the statement of inventive concept; statement of inventive concept provides a suitable basis for a novel and arguably inventive independent claim; statement of inventive concept provides a suitable basis for an otherwise valid independent claim; correct use of grammar, punctuation and spelling throughout the claim(s); and effective engagement and collaboration between students in their group. Second Group Exercise: The set of claims are assessed by taking into account: the scope of the independent claim and, in particular, whether it is of a sufficiently broad scope that it is difficult for third parties to avoid infringing that claim; novelty, inventiveness and clarity of the independent claim and whether it is otherwise arguably valid under the Patents Act 1990; structure of the set of dependent claims and their suitability in providing a series of fallback positions for the independent claim; novelty, inventiveness and clarity of each dependent claim and whether each dependent claim is otherwise arguably valid under the Patents Act 1990; the dependencies of the dependent claims; correct use of grammar, punctuation and spelling throughout the claims; and effective engagement and collaboration between students in their group.

Assessment task 2: Two individual claim drafting exercises

Objective(s):	This task addresses the following subject learning objectives: 1, 2 and 3 This task contributes specifically to the development of the following graduate attributes: 1.1, 3.1 and 5.1
Weight:	20%
Length:	First Claim Drafting Exercise: 250 words. Second Claim Drafting Exercise: 250 words.
Criteria:	In each of the two claim drafting exercises, an independent claim, when present, is assessed in accordance with the following criteria: the scope of the independent claim and, in particular, whether it is of a sufficiently broad scope that it is difficult for third parties to avoid infringing that claim; novelty, inventiveness and clarity of the independent claim and whether it is otherwise arguably valid under the Patents Act 1990; and correct use of grammar, punctuation and spelling throughout the independent claim. In each of the two claim drafting exercises, a set of dependent claims, when present, is assessed in accordance with the following criteria: structure of the set of dependent claims and their suitability in providing a series of fallback positions for the independent claim; novelty, inventiveness and clarity of each dependent claim and whether each dependent claim is otherwise arguably valid under the Patents Act 1990; correct use of grammar, punctuation and spelling throughout the dependent claims; and the dependencies of the dependent claims.

Assessment task 3: Professional Conduct Exercise

Objective(s):	This task addresses the following subject learning objectives: 6 This task contributes specifically to the development of the following graduate attributes: 2.1 and 5.1
Weight:	10%
Length:	600 words
Criteria:	The assessment mark for this item is measured against the following criteria: Identification of the relevant legislative provisions and case law applicable to the problem Application of the relevant law to the facts as presented in an articulate, reasoned and logical manner Coherent analysis of the legal issues (and policy issues if relevant) Strategic problem solving offering viable commercial solutions Concise and coherent articulation of complex ideas Clear written expression with correct use of grammar, punctuation and spelling.

Assessment task 4: Two Written Assessment Tasks (WATs)

Objective(s):	This task addresses the following subject learning objectives: 1, 2, 3, 4 and 5 This task contributes specifically to the development of the following graduate attributes: 1.1, 3.1 and 5.1
Weight:	20%
Length:	WAT 1: 1700 words WAT 2: 1700 words
Criteria:	The assessment marks for these items are measured against the following criteria: inventive concept incorporated in the independent claim to define the invention and its consistency with the applicant’s main objective; the scope of the independent claim and, in particular, whether it is of a sufficiently broad scope that it is difficult for third parties to avoid infringing that claim; novelty, inventiveness and clarity of the independent claim and whether it is otherwise arguably valid under the Patents Act 1990; structure of the set of dependent claims and their suitability in providing a series of fallback positions for the independent claim; novelty, inventiveness and clarity of each dependent claim and whether each dependent claim is otherwise arguably valid under the Patents Act 1990; the dependencies of the dependent claims; the consistency of the various parts of the body of the specification with the claims in describing the invention defined by the claims; the body of the specification in supporting and enabling the invention across the entire scopes of the claims. Of particular importance from the support perspective is whether the object of the invention, the description of the background art in the body of the specification and the descriptions of the other parts of the body of the specification are consistent with the claims, especially the main independent claim; and correct use of grammar, punctuation and spelling throughout the body of the specification and the claims.

Assessment task 5: Final Exam

Objective(s):	This task addresses the following subject learning objectives: 1, 2, 3, 4 and 5 This task contributes specifically to the development of the following graduate attributes: 1.1, 3.1 and 5.1
Weight:	40%
Length:	1700 words
Criteria:	The assessment marks for this item are measured against the following criteria: the inventive concept incorporated in the independent claim to define the invention and its consistency with the applicant’s main objective; the scope of the independent claim and, in particular, whether it is of a sufficiently broad scope that it is difficult for third parties to avoid infringing that claim; novelty, inventiveness and clarity of the independent claim and whether it is otherwise arguably valid under the Patents Act 1990; structure of the set of dependent claims and their suitability in providing a series of fallback positions for the independent claim; novelty, inventiveness and clarity of each dependent claim and whether each dependent claim is otherwise arguably valid under the Patents Act 1990; the dependencies of the dependent claims; the consistency of the various parts of the body of the specification with the claims in describing the invention defined by the claims; the body of the specification in supporting and enabling the invention across the entire scopes of the claims. Of particular importance from the support perspective is whether the object of the invention, the description of the background art in the body of the specification and the descriptions of the other parts of the body of the specification are consistent with the claims, especially the main independent claim; and correct use of grammar, punctuation and spelling throughout the body of the specification and the claims.

Required texts

1. Topic Materials and Case studies provided on Canvas.
2. World Intellectual Property Organization, WIPO Patent Drafting Manual, (Available online at http://www.wipo.int/edocs/pubdocs/en/patents/867/wipo_pub_867.pdf).
3. Slusky, Ronald D., Invention Analysis and Claiming – A Patent Lawyer’s Guide, (American Bar Associations, 2nd ed., 2014).
4. McCann, John, Glossary of Patent Terms (supplied with lecture materials).

Recommended texts

1. Faber, Robert C., Faber on Mechanics of Patent Claim Drafting (Practising Law Institute, 7th ed., 2016).
2. Sheldon, Jeffrey G., How to write a patent application (Practising Law Institute, 3rd ed., 2015).
3. Roberts, Gwilym, A Practical Guide to Drafting Patents, (Sweet & Maxwell, 2nd ed., 2016).

References

1. Bodkin, Colin, Patent Law In Australia (Thomson Reuters, 2nd ed., 2014). Also available online at the UTS Library via the Westlaw AU database.
2. Lexis Nexis, Lexis Nexis Patent Commentary,. (Available online at the UTS Library via the Lexis Nexis Australia – Intellectual Property database).
3. Lexis Nexis, Lexis Nexis Halsbury’s Laws of Australia – Intellectual Property, (Available online at the UTS Library via the Lexis Nexis Australia – Intellectual Property database).

Other resources

• IP Australia, Australian Patent Office Manual of Practice and Procedure, Volume 2 - National, IP Australia Canberra (Available online at http://www. ipaustralia. gov. au/ pdfs/ patentsmanual /Web Help/ Patent _Examiners _Manual .htm).